DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015145521 A1 (Fukasawa et al.) – translation attached and relied upon below.
With respect to claim 1, Fukasawa teaches a composite active material (Figure 1, 10) for a secondary battery, the composite active material (10) comprising:
silicon particles (11a) with an average particle size of 2-150 nm (page 3, last 9 lines), which falls within the instantly claimed range of 150 nm or less;
a matrix phase (11b) in which the silicon particles (11a) are dispersed; and
a silicate compound (within phase (13)) of at least one metal/magnesium selected from the group consisting of Li, K, Na, Ca, Mg, and Al (page 4, 7th paragraph), the composite active material (10) having the silicate compound (within phase (13)) in a near-surface (13) of the silicon particles (11a) (as illustrated). It would have been obvious to one having ordinary skill in the art at the time of filing for the invention to try different average particle sizes within the range of 2-150 nm in order to optimize the performance of the active material.
With respect to claim 2, Fukasawa teaches wherein a silicate concentration in the near-surface (13) of the silicon particles (11a) is higher than a silicate concentration in the matrix phase (11b) (page 3, lines 25-31).
With respect to claim 3, Fukasawa teaches wherein silicon dioxide (silicon oxide) in the near-surface (11) of the silicon particles (11a) (Figures 1-2) (page 3, lines 25-31).
With respect to claim 4, Fukasawa discloses all of the claims limitations as set forth above fails to teach wherein a molar ratio of the silicon dioxide is 0.9 or less with a total amount by mole of the silicate compound and the silicon dioxide as 1. However, the specific molar ratio is not considered to confer patentability to the claims. As the battery cell cost of construction and efficiency of operation are variables that can be modified, among others, by adjusting said molar ratio, with said construction cost and operating efficiency both increasing as the molar ratio is optimized, the precise molar ratio would have been considered a result effective variable by one having ordinary skill in the art at the time of filing for the invention. As such, without showing unexpected results, the claimed molar ratio cannot be considered critical. Accordingly, one of ordinary skill in the art at the time of filing for the invention would have optimized, by routine experimentation, the molar ratio in the battery cell of Fukasawa to obtain the desired balance between the construction cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
With respect to claim 5, Fukasawa teaches wherein the silicate compound is a magnesium silicate compound (page 4, 7th paragraph).
With respect to claim 6, Fukasawa discloses all claim limitations as set forth above but fails to teach wherein the magnesium silicate compound in the near-surface of the silicon particles is a crystalline film with a thickness of 0.2 nm to 10 nm.
However, the specific thickness of the magnesium silicate compound in the near-surface (13) of the silicon particles is not considered to confer patentability to the claims. As the battery cell cost of construction and efficiency of operation are variables that can be modified, among others, by adjusting said thickness, with said construction cost and operating efficiency both improving as the thickness is optimized, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time of filing for the invention. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time of filing for the invention would have optimized, by routine experimentation, the thickness in the battery cell of Fukasawa to obtain the desired balance between the construction cost and the operation efficiency (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
With respect to claim 7, Fukasawa teaches wherein the matrix phase contains at least a compound represented by SiOxCyNz/(silicon oxide (Figure 2, 11)), where 1 ≤ X ≤ 2, 1 ≤ y ≤ 20, and 0 ≤ z ≤ 0.5.
With respect to claim 8, Fukasawa teaches wherein the silicon particles (Figure 1, 11a) are flake-like crystals (page 4, 1st paragraph), and a crystallite size obtained from a peak with 20 of 28.4° in an X-ray diffraction spectrum is 25 nm or less.
With respect to claim 9, Fukasawa teaches wherein the composite active material has an average particle size of 0.1 µm to 50 µm (page 3, last paragraph), which encompasses the instantly claimed range of 1 µm to 15 µm. It would have been obvious to one having ordinary skill in the art at the time of filing for the invention to try different average particle sizes of the composite active material within the range of 0.1 µm to 50 µm in order to optimize the performance of the active material.
Though Fukasawa fails to teach wherein the composite active material comprises a specific surface area of 1 m²/g to 30 m²/g as instantly claimed, it would be obvious that since Fukasawa discloses a an average particle size of the composite active material that encompasses that instantly claimed, then the composite active material of Fukasawa is bound to have a specific surface area that encompasses that instantly claimed.
With respect to claim 10, Fukasawa teaches a secondary battery comprising the composite active material for a secondary battery according to claim 1 in a negative electrode (Abstract).
Conclusion
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/KAITY V CHANDLER/ 9/30/2026Primary Examiner, Art Unit 1725
